You make excellent points. Your charitable characterization of Gil’s proposal, however, misses the basic flawed legal premise of his proposal – that IEEE-SA should breach the contract with legacy SEP holders. The contract involves patent holders’ agreement to pledge SEPs under the specific terms of the previous patent policy, terms which IEEE-SA accepted and is therefore legally bound by. Gil’s proposal is that IEEE-SA breach its obligations under those contract to compel those legacy SEP holders to LOA terms they never agreed to – i.e., unilaterally reopen the contract to new terms. It is of no moment that there might have been “work in progress” pertaining to the SEPs that were pledged under the previous patent policy. That “work in progress” created neither express nor implied obligations by the SEP holders to be bound by terms other than those they agreed to in the legacy LOAs. To take Gil’s proposal to its logical equitable conclusion, if IEEE-SA were to reopen these legacy LOA submitters’ rights and obligations, the only way it can lawfully do so is through a bilateral reopening which would also permit the legacy SEP holders to withdraw their previous LOA commitments altogether without any substitution.

Thank you for circulating the agenda. I wanted to propose an expansion of the discussion of Agenda Item 5.2. The current agenda item involves the addition of FAQ text to suggest to Working Group chairs that they consider asking for a new LoA when an Accepted LoA pre-dates the effective date of the text of the patent policy (currently, March 15, 2015). I agree with the proposal. I am concerned, however, that it does not resolve the uncertainty that has existed since March 15, 2015 regarding the applicability of the updated policy text to “work in process” – i.e. standards development efforts that were ongoing on March 15, 2015, and even standards development that began after March 15, 2015, but which arguably are within the scope of LoAs accepted before March 15, 2015.

In its resolution approving the “Draft 39” text that became the text of the updated patent policy, the Standards Association Standards Board of Governors (resolution dated December 2014, available here: https://standards.ieee.org/about/bog/resolutions.html) provided for the March 15, 2015 effective date for the updated policy tex. However, IEEE-SA but did not expressly address the question of the application of the updated policy text to “work in process”. As Chuck Adams noted at the June 2016 PatCom meeting questions have arisen regarding the application of the updated policy text to “work in process”. One troubling issue raised by the potential application of different patent policy texts to the same standards development effort is that different participants will be participating under different versions of the patent policy text.

The proposal under Agenda Item 5.2 helpfully calls the attention of Working Group participants to the possibility that the submitter of a pre-update LoA may be relying on an LoA submitted before the effective date of the updated patent policy text. However, IMHO more is needed to provide clarity and create a “level playing field” for participants in IEEE-SA standards development. Specifically, PatCom needs to draw a bright line identifying what standards development activities are covered by the updated text.

One approach would be to look at the date on which the PAR governing the creation of a standard, amendment, or revision for which a patent may be essential. The declaration and licensing of patents essential to standards developed based on PARs approved on or after March 15, 2015 would be governed by the updated policy text. This would be true even if the patentee that submitted an LoA accepted before March 15, 2015 claims that the patent is within the scope of that LoA.

The PAR-based rule both avoids retroactive application of the patent policy and provides certainty to participants regarding which patent policy text governs which IEEE-SA standards development effort.

To anticipate questions regarding the interplay between the PAR-based approach to the coverage of the updated policy text and Operations Manual 6.3.4, it should be clear that a patentee that has submitted a previously accepted LoA that covers patents essential to a standard created under a PAR approved after the effective date of a by-law change may, within a reasonable time after the approval of a new PAR, choose to withdraw that previously accepted LoA and substitute a new accepted LoA without being subject to a continuing commitment to license under the previous LoA under the current Operations Manual 6.3.4.